WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CBS Radio Inc. v. ROS Promotions LLC, Matt McDermott

Case No. D2012-1910

1. The Parties

Complainant is CBS Radio Inc. of New York, New York, United States of America, represented internally.

Respondent is ROS Promotions LLC, Matt McDermott, of Westmont, New Jersey, United States of America, self represented.

2. The Domain Names and Registrar

The disputed domain names <wingbowl20.com>, <wingbowl21.com> and <wingbowl22.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2012. On September 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 28, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain names.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2012. The Response was filed with the Center on October 20, 2012.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on November 6, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is one of the largest major-market radio operators in the United States and operates 127 radio stations across 28 markets. It is the parent company of CBS Radio East Inc., which is the licensee and owner of radio station WIP-FM in Philadelphia, Pennsylvania. It is the owner of a service mark registration with the United States Patent and Trademark Office for the WING BOWL mark, bearing U.S. Registration No. 2,025,567, registered on December 24, 1996. The URL for Complainant’s WING BOWL brand is <wingbowl.cbslocal.com>.

On or about January 3, 2011, Respondent registered the disputed domain names.

Complainant sent a letter to Respondent dated October 26, 2011, requesting that Respondent transfer the disputed domain names to Complainant. Since the Respondent did not respond, the Complainant sent another letter dated April 23, 2012, again requesting that Respondent transfer the disputed domain names to Complainant. On April 25, 2012, Complainant received an email from Respondent with an attached letter in which Respondent refused to transfer the disputed domain names to Complainant. Instead, the Respondent, through its administrative and technical contact Matt McDermott, stated that it would “gladly transfer these three domain names to [Complainant] at a price of $3,000”.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the exclusive U.S. licensee of the trademark WING BOWL for entertainment service, namely a chicken-wing eating contest which first took place on January 29, 1993. The event takes place annually, typically during the month of February. The event recently celebrated its twentieth anniversary with WING BOWL 20 on January 3, 2012, at the Wells Fargo Center in Philadelphia, Pennsylvania. WING BOWL 21 and 22 are scheduled for 2013 and 2014, respectively.

It alleges that Complainant is the owner of the domain name <wingbowl.cbslocal.com> where it promotes and provides information regarding the eating contest.

The Complainant contends that:

- the disputed domain names are confusingly similar to Complainant’s trademark;

- Respondent has no rights or legitimate interests in the disputed domain names; and

- Respondent should be considered to have registered and used the domain name in bad faith and that Respondent has intentionally attempted to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Complainant’s trademark.

(i) Identical or Confusingly Similar

Complainant contends that the disputed domain names clearly use Complainant’s WING BOWL mark in its entirety. It further remarks that the disputed domain names <wingbowl20.com>, <wingbowl21.com> and <wingbowl22.com> also pair Complainant’s mark with the numbers “20”, “21” and “22”, respectively, which does not diminish similarity, since the Complainant denotes its annual WING BOWL event using numbers to represent each successive edition of the event.

(ii) Rights or Legitimate Interests

The Complainant contends that the Respondent is not a licensee of the Complainant, nor has the Complainant granted any permission or consent to Respondent to use the WING BOWL mark or any domain name incorporating the mark or any other mark confusingly similar thereto. It further contends that Respondent is not commonly known by the disputed domain names, and that Respondent is not making a legitimate or fair use of the disputed domain names. The disputed domain names are not being used in connection with a bona fide offering of goods and services. On the contrary, Complainant contends that Respondent is merely passively holding the disputed domain names.

(iii) Registered and Used in Bad Faith

Complainant contends that given the fame and renown of the WING BOWL mark and the fact that Complainant’s servicemark registration predates Respondent’s registrations of the disputed domain names by many years, Respondent clearly knew or should have known of Complainant’s registration and use of the mark prior to registering the disputed domain names. It contends further that the timing of the Respondent’s registration, approximately one month prior to Complainant’s nineteenth annual WING BOWL event, demonstrates Respondent’s actual knowledge of Complainant’s mark and intent to capitalize on the mark for at least three years.

Complainant alleges that Respondent’s actions were undertaken in bad faith, primarily for the purpose of disrupting the business of Complainant and to prevent Complainant from making use of its own mark in a domain name. Respondent’s bad faith is further illustrated by the fact that the disputed domain names all resolve to “parking pages” with pay-per-click links to sites with products or services that are unrelated to Complainant’s WING BOWL mark. Furthermore, Complainant contends that bad faith was demonstrated by the offered sale price of USD 3,000.00 which indicates Respondent’s interest in commercial gain.

Complainant requests that the disputed domain names be transferred to Complainant.

B. Respondent

Respondent, Matthew McDermott, filed a full response to the Complaint, as follows:

(i) Identical or Confusingly Similar

Respondent contends that Complainant did not provide substantial evidence that the WING BOWL mark is “famous” or “popular”. He remarks that it does not constitute “factual background. This is merely an unsupported opinion,” that Complainant’s mark is “well known to the public and within the competitive eating industry, and that the Mark has become famous”.

Respondent contends that Complainant has not made an effort to register domain names more closely associated with the WING BOWL mark, such as <wingbowl.com>. He further contends that Complainant did not evidence designation of roman numbers for events prior to “Wingbowl20”, “Wingbowl21” or “Wingbowl22”. Because of that, there is no reasonable connection between the disputed domain names <wingbowl20.com>, <wingbowl21.com> and <wingbowl22.com> to the URL for the Complainant’s brand, which is <wingbowl.cbslocal.com>.

Respondent submits that the common element of the Complainant’s mark and the disputed domain names, “wing bowl” has a weak descriptive or possibly generic nature. Rather, the “bowl” designation, which is contained in the disputed domain names is a basic generic designation and not a fanciful and distinctive term. Because of a different sound, appearance and meaning of “wing bowl”, the disputed domain names are neither identical nor confusingly similar to the Complainants mark.

(b) Rights or Legitimate Interests

Respondent contends that he has legitimate interest in the disputed domain names <wingbowl20.com>, <wingbowl21.com> and <wingbowl22.com> and that he intends to use them to showcase amateur events, particularly shuffle boards tournaments, referred to as championships, or bowls in connection with Respondent’s local activities. He expressly declares that he is not parking the disputed domain names for a commercial purpose. He submits that the links displayed at the disputed domain name are merely “default parking” and that any advertising revenues generated are solely earned and paid directly to Godaddy.com, the Registrar.

(c) Registered and Used in Bad Faith

Respondent contends that Complainant has not provided any evidence that would indicate Respondent did have knowledge of Complainant’s rights at the time the disputed domain names were registered. Since Respondent is not a listener of Complainant’s referenced radio station, he declares that he was not aware of the WING BOWL mark at the time of the registration of the disputed domain names. In particular he states that Complainant can’t expect to suffer extreme hardship if the domain is not transferred when the Complainant never used a domain name like <wingbowl(number).com> in the past to market this event.

Respondent offered to sell the three disputed domain names to the Complainant for a sum of USD 3,000.00. He contends that this offer was not for commercial gain, but solely the best estimate of time accumulated (USD 1,000.00 for each disputed domain name) that he had invested to creatively outline the design of websites he intended to put up at the disputed domain names. The price of USD 1,000.00 per domain name would be a reasonable estimate and price where Respondent spent considerable time developing the outlines for the websites and maintaining the disputed domain names. He submits that he was not holding the disputed domain names with the intent to sell or profit from selling the disputed domain names. No auction sale occurred nor were these disputed domain names ever put up for sale or offered to any third party.

He further contends that Complainant did not provide any evidence from which it could be inferred that the Respondent knew about Complainants mark at the time when he registered the disputed domain names in 2011.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, Complainant must prove that:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark.

The disputed domain names <wingbowl20.com>, <wingbowl21.com> and <wingbowl22.com> contain sufficient identity to Complainant’s mark (WING BOWL) to be confusingly similar to the mark. UDRP panels have consistently concluded that a domain name’s inclusion of a registered mark in its entirety results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a Domain Name wholly incorporates a Complainant's registered Mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such Marks”); Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (<playboysportsbook.com> was found confusingly similar to the PLAYBOY mark); and Adaptive Molecular Technologies, Inc. v. Piscilla Woodward S Charles R Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 (the distinctive features of the domain name were the complainant's mark).

The mere addition of the numbers 20, 21 and 22 to the disputed domain names does not change this ruling since the Panel finds that those numbers represent each successive edition of the eating event in the years 20 12, 2013 and 2014. Therefore the numbers further represent the confusing similarity of the disputed domain names to the Complainant’s mark.

Respondent’s use of a top-level domain (“.com”) may be considered as irrelevant to Policy, paragraph 4(a)’s “confusing similarity” inquiry and is thus disregarded. Altria Group v. Daniel Cheng, WIPO Case No. D2009-1764.

Contrary to Respondent’s statement it is irrelevant if the Complaint or its trademark is famous or not. Fame is not part of the first UDRP element, which is solely about whether a disputed domain name is identical or confusingly similar to a mark in which the complainant has established rights.

The Panel finds that the first element of the Policy has been established here.

B. Rights or Legitimate Interests

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762. Accordingly, Complainant needs only make out a prima facie case that Respondent lacks rights or legitimate interests in the domain names. Id. Upon such a showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names. Id.

In this case the Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(a) of the Policy.

This finding is based on the following, non-disputed, circumstances:

- Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the WING BOWL mark in the disputed domain names or any other domain name.

- There is no indication in the file that Respondent is known under the disputed domain names.

- The disputed domain names are primarily representative of Complainant’s services as they incorporate Complainant’s WING BOWL mark. Hence, Respondent’s use of the disputed domain names appears to be merely intended to divert Internet users to Respondent’s websites and cannot be considered a bona fide offering of goods and services.

Further, the Panel concludes that Respondent has not successfully demonstrated any rights or legitimate interests in the disputed domain names. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances may be:

- demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Respondent did not use the disputed domain names to offer goods or provide services. Nor has he been commonly known by the disputed domain names. In addition, the Respondent allowed the websites to which the disputed domain names direct to be parked with links by the Registrar, GoDaddy.com. The Panel views it as irrelevant whether this was “default parking”. The Panel further cannot see the connection that Respondent has to the disputed domain names. Respondent did not make clear in which way its planned shuffleboard contests are related to the words “wing bowl” or to the numbers 20, 21 and 22. Therefore the only plausible reason, in the view of the Panel, for Respondent to register the disputed domain names was to earn revenue by selling them to the Complainant or by directing them to parked websites containing commercial links. This is neither noncommercial nor fair use of the disputed domain names.

For the foregoing reasons, the Panel concludes that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by Complainant and that Respondent's bad faith registration and use of the disputed domain names has been proven.

The third element of the Policy requires that Complainant establish that the disputed domain names have been registered and used in bad faith.

Paragraph 4(b) provides the following four (non-exclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a disputed domain name:

"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or

(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or your location."

The Panel finds that at the minimum the circumstance set out in paragraph 4(b)(i) is fulfilled here. In the Panel’s view there is sufficient evidence that leads to the finding that Respondent acquired the disputed domain names primarily for the purpose of selling them to Complainant, who is owner of the trade mark WING BOWL. When Complainant asked Respondent to transfer the disputed domain names to it, Respondent answered in an email that it would do so for a price of USD 3,000.00. The Panel finds this behavior shows clearly that the Respondent registered the disputed domain names primarily for the purpose of selling them. Furthermore, the offered sale price of USD 3,000.00 represents an amount of money far in excess of Respondent’s out-of-pocket costs in registering the disputed domain names.

In the Panel’s view, further proof of bad faith is that the Respondent chose the numbers 20, 21 and 22 in addition to the Complainant’s WING BOWL mark. These numbers represent each successive edition of the eating event: on February 3, 2012, Wing Bowl 20 took place in Philadelphia. Wing Bowl 21 and Wing Bowl 22 are scheduled for 2013 and 2014, respectively. The use of these very numbers shows clearly that the Respondent was, or must have been, aware of the Complainant’s eating contests and mark when it registered the disputed domain names.

In addition the Respondent stated in his initial reply to Complainant, that he was aware of the Lanham Act. This indicates further to the Panel that Respondent has acted willfully in not transferring the disputed domain names when requested by Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <wingbowl20.com> <wingbowl21.com> and <wingbowl22.com> be transferred to Complainant.

Maxim H. Waldbaum
Sole Panelist
Date: November 13, 2012